Since 1952, CBS has owned and operated "Television City," a facility located in Los Angeles, California designed for the production of television shows. On January 26, 1988, the service mark "Television City" was registered on the Principal Register in the United States Patent and Trademark Office in the name of CBS Inc., as U.S. Service Mark Registration No. 1,474,506. The mark was granted for the following categories: "for television production services" and "for entertainment services, namely the production and distribution of television programs, rental of television production facilities and the providing of tours of production facilities to the public." The facility has a somewhat storied past within American popular culture, having been the home to many of CBS' best television series. Today, many soap operas and game shows are produced at Television City, and hundreds of people descend upon the facility each day in order to be a member of a studio audience. The name "Television City" is shown numerous times each week in connection with these television shows, and can often be heard in the voice-over accompanying each show's introduction. In addition, there is a small retail operation at the facility which sells such memorabilia as T-shirts, pins, watches and the like, each bearing the name "CBS Television City."

There can be no disputing that CBS is the owner of an incontestable, registered service mark -- at least with regard to television production services. The strength of the mark within the television production field is not questioned. The central issue is whether this mark extends from the television production arena to the restaurant arena. The Second Circuit has held that "the strength of an incontestible registered trademark could be overcome by the use of a descriptive or weak portion of the mark." Gruner Jahr, 991 F.2d at 1077. See also W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993) (incontestable registered trademark for "Sportstick" lip balm was not infringed by Gillette's "Sport Stick" deodorant); Western Pub. Co. v. Rose Art Indus. Inc., 910 F.2d 57, 60 (2d Cir. 1990); Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990) (observing that registration does not remove proper noun from general language or reduce it to exclusive possession of registrant for all purposes). Additionally, "a term that is in one category for a particular product may be in quite a different one for another." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

The standard for granting preliminary injunctive relief in this circuit is well settled. CBS must show "(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979) (per curiam). See Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985).

(A) Irreparable Harm

Plaintiff asserts it will suffer irreparable harm from the public confusion it claims will result from defendants' use of their mark. This confusion will be heightened by the fact that other "theme" restaurants in the area are using marks under licensing agreements, and that the public may assume that defendants' restaurant is operated under a similar agreement with plaintiff.

Defendants argue that there is no possibility of irreparable harm for two reasons. First, they claim that CBS unreasonably delayed in bringing this action, thereby proving that there is no risk of irreparable harm. Second, they claim that CBS attempted to work out a licensing agreement whereby defendants would pay a sum of money in exchange for use of CBS' mark. Defendants argue that such an attempt at settlement is proof that legal remedies are adequate and therefore CBS cannot prove irreparable harm.

Defendants' claim of unreasonable delay appears to be without merit. The facts show that CBS first became aware of a plan to use their mark in April, 1993; that at that time they explained to defendants' architect that CBS would protest the use of its mark; and that CBS made attempts to discover the backers of the restaurant plan in order to take action against them. In July 1993, CBS learned from the New York Times that the proposed backers of the restaurant were the defendants, and set about attempting to locate them in order to bring the trademark matter to their attention. After pursuing what amounted to a false lead, CBS' agent finally contacted defendants in December 1993. The two sides exchanged communications regarding a possible settlement, but such discussions were not fruitful. CBS filed suit in March, 1994. This does not appear to be an unreasonable delay that might preclude a showing of unreasonable harm.

As to the settlement claim, it appears that the fact that CBS was willing to settle the dispute does not mean that no equitable remedy exists. To rule otherwise would result in punishing a party for attempting to settle, rather than encouraging parties to settle.

(B) Likelihood of Confusion

Likelihood of confusion has been defined as the likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or simply confused, as to the source, sponsorship or affiliation of defendant's goods or services. Western Pub. Co., 910 F.2d at 59. The law of this circuit with respect to likelihood of confusion was set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961). While not absolutely dispositive, the Polaroid factors establish a balancing test consisting of the following factors: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the two marks; (4) the likelihood that the senior user of the mark will bridge the gap; (5) evidence of actual confusion; (6) the junior user's bad faith in adopting the mark; (7) the quality of the junior user's mark; and (8) the sophistication of the relevant consumer group. Id. at 495.

(1) Strength of the Mark

The strength of a mark is "its tendency to identify goods sold as emanating from a particular, even if anonymous source." See Mead Data Central v. Toyota Motor Sales, U.S.A., Inc., 702 F. Supp. 1031, 1035 (S.D.N.Y. 1988). The strength of the mark is the central issue as it will determine the breadth of the mark's protection.

CBS established the first facility used exclusively for television production in 1952 and named it "Television City." Pursuant to 15 U.S.C. § 1065, CBS used the mark continuously for five consecutive years following its registration and it has become an incontestable mark. Although the mark covers only the words "Television City," the plaintiff uses it almost exclusively as "CBS Television City." In this regard, it seems that public recognition of the mark, to the extent that it is recognized, would be more for "CBS Television City," rather than for "Television City." Moreover, defendants' restaurant will not be broadcasting or producing any television programs. The mere similarity in the subject matter - that they both necessarily involve television - does not grant CBS protection in every area where television is an underlying theme.

CBS produces televisions shows at Television City in California. The mark is to protect the name in that context. The intended use of defendants' proposed restaurant will primarily be serving food. There simply is little or no overlap between the services provided be each of the parties. Additionally, the production site and the proposed restaurant are on opposite coasts. While it is true that an avid fan of television may be attracted to both places, it does not mean that they would visit one at the expense of the other. The individual would have two entirely different experiences. CBS invites the public into CBS Television City to make up the audiences for its game shows and other television programs produced on site. While there, CBS provides a tour of the facility. However, there was testimony that the public is excluded from CBS Television City for all purposes other than for seeing a show produced. One of the defendants testified that he called the studio and was informed that it was not open to the public. (Defs.' Br. at 9). Plaintiff did not conduct surveys or investigations with regard to the public recognition of CBS Television City. However, plaintiff nonetheless concludes that the name of a production studio has a nationwide reputation which will be damaged by a restaurant bearing the same name. There is little overlap of markets between plaintiff's and defendants' services. Accordingly, this factor favors a finding for defendants.

(4) Bridging the Gap

This factor evaluates "whether the senior user of the mark is likely to enter the market in which the junior user is operating." Centaur Communications Ltd., 830 F.2d at 1227. Trademark law protects a senior user's right to enter into a related field in the future. Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1172 (2d Cir. 1976). CBS claims in its papers that it is currently planning to open a full service restaurant near the Ed Sullivan Theater on West 57th Street in Manhattan. This proposed restaurant, which plaintiff has apparently acquired, is to be a "television theme restaurant. . . probably focusing on the history of television." (Pl.'s Reply Mem. of Law at 23). It must be noted that plaintiff's mark is afforded protection in the television production area and related areas only. Plaintiff's announcement that it is looking to enter the restaurant business is irrelevant to this claim. It is a competitive venture to that of the defendants, but since the restaurant business is not "related" to television production, CBS' mark does not necessarily protect this latest endeavor by CBS.

This factor looks to whether the defendants "adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [defendant's] and the senior user's product." W.W.W. Pharmaceutical, 984 F.2d at 575 (quoting Lang v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991) (citation omitted)). In the present case, while CBS argues for bad faith to be inferred, it fails to put forth any evidence that defendants chose this particular mark with the intent of capitalizing on any goodwill which CBS had acquired. See W.W.W. Pharmaceutical Co., Inc., 984 F.2d at 575 ("[Plaintiff] has not put forth any evidence that [defendant] intended to promote confusion between the products or appropriate [plaintiff's] good will and therefore has not shown any bad faith on [defendant's] part."). Without more, it appears that defendants did not act in bad faith and this factor does not favor either side.

(7) Quality of Junior User's Product

While defendants' restaurant is not yet open, there is no evidence to suggest that it will be anything but top quality.
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CBS acknowledges this fact, yet makes the point that "[A] senior user is entitled 'to protect its reputation even where the infringer's goods are of top quality.'" Berkshire Fashions, Inc. v. Sara Lee Corp., 725 F. Supp. 790, 799 (S.D.N.Y. 1989) (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259-60 (2d Cir. 1987). However, because defendants' restaurant has not yet been opened, any discussion of the quality of the defendants' product would be speculative and the issue will not be addressed.

(8) Sophistication of the Consumers

"As a general rule, sophistication of the consumer is a factor that will weigh against a finding of likelihood of confusion." Comic Strip, Inc., 710 F. Supp. at 980 (citation omitted). Defendants' potential customers will be drawn from the general public and thus cannot be said to have unique qualities or sophistication. In fact, the only generalization which it would be possible to make regarding the restaurant's clientele is that many of them will undoubtedly be television watchers.
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